USM Bylaws, Policies and Procedures of the Board of Regents
IV-3.00-POLICY ON PATENTS
(Approved by the Board of Regents, May 31, 1990; Technical
Amendment May, 2003)
(On February 8, 2002, the Board of Regents replaced this
policy with Policy on Intellectual Property IV-3.20 for
all patents disclosed on or after July 1, 2002. This
policy remains applicable only for intellectual property
disclosures made before July 1, 2002)
I. Objectives
The objectives of this policy are to encourage and
aid research at the University of Maryland System, to provide
financial compensation as well as professional recognition
to inventors, and to protect and best serve the public
interest. To these ends, this policy encourages disclosure of
inventions and discoveries and their evaluation for possible
patenting and licensing and establishes principles for
determining the rights of the constituent institutions
and inventors. The University of Maryland System continues
to encourage scholarly publication of the results of faculty
and student research.
II. Applicability
A. The University of Maryland System Patent Policy applies
to all personnel. As used in this policy, "personnel"
means all paid and unpaid full-time and part-time faculty
members and staff, and all paid employees (including
those on approved leaves); and students and fellows.
III. General Policy
A. The University of Maryland System has an interest in all
inventions of personnel which are conceived or first
actually reduced to practice as a part of or as a result
of: a University System Administration or constituent
institution administered program of research; activities
within the scope of the inventor's employment by the
University System Administration or constituent
institution; or activities involving the use, to a
substantial degree, of University System Administration
or constituent institution time, facilities, or materials
or of University System Administration or constituent
institution information not available to the public.
"Invention" means any invention or discovery which is or
may be patentable or which may be commercially
licensable. At the time of appointment of visiting
faculty and staff a signed acknowledgement of this policy
will be required. An invention shall be considered as
resulting from activities "within the scope of the
inventor's employment" whenever his or her duties
include research or investigation or the supervision of
research or investigation and the invention is relevant to
the general field of inquiry to which the inventor was
devoted or assigned. "Time, facilities and materials"
paid for from funds administered by the University System
Administration or constituent institution shall be
considered University System Administration or
constituent institution time, facilities and materials
whether the funds arise from federal or state
appropriations, student fees, donations, grants,
contracts or other sources.
B. The University System Administration or constituent
institution has a right to ownership of any invention in
which it has an interest. Unless otherwise agreed, this
Policy also applies to any inventions in which the
University System Administration or constituent
institution has an interest under the terms of contracts,
grants or other agreements. An invention in which the
University System Administration or constituent
institution does not have a legal interest may be offered
to the University System Administration or constituent
institution, and, if accepted, the University System
Administration or constituent institution will administer
such invention in accordance with this Patent Policy or
as otherwise agreed.
C. Except under special circumstances the University System
will not agree to assign rights in future inventions to
private corporations or businesses.
IV. Responsibilities of the University of Maryland System and
Delegations of Authority
A. The University System shall: (1) notify the inventor
promptly whenever it decides not to pursue or to abandon
the pursuit of patenting or commercialization of an
invention, (2) execute, upon request, all contracts,
assignments, waivers or other legal documents necessary
to transfer to the inventor the University System's
interest in any invention which it has so chosen not to
pursue, (3) act with reasonable promptness and in good
faith on all inventions disclosed to it, and (4) remit to
the inventors their shares of income from inventions as
specified in Section VI of this policy. Subject to these
responsibilities, the University System may, at any time,
decide not to pursue or to abandon the pursuit of
patenting and/or commercialization of an invention in
which it has an interest.
B. Authority and responsibility for Patent Policy is
delegated to the Chancellor (or his designee). The
Chancellor (or his designee) may seek the advice and
assistance of the University of Maryland System
Intellectual Property Committee (hereafter called the
Intellectual Property Committee; see Section VIII below).
The responsibility for administration of the University
of Maryland System Patent Policy (including subparts 1-4
of IV.A.) is delegated to the chief executive officers of
constituent institutions, except that rights in future
inventions shall not be assigned unless the Chancellor
determines in writing that doing so is in the best
interests of the System. Each constituent institution
shall develop procedures for implementing this policy.
V. Responsibilities of Personnel
A. Personnel who, either alone or in association with
others, make an invention in which the University
System has or may have an interest shall disclose to
the chief executive officer or designee such inventions
reasonably promptly. As to an invention in which the
University System through the constituent institution
has an interest, the inventor, upon request, shall
execute promptly all contracts, assignments, waivers or
other legal documents necessary to vest in the
University System, or its assignees, any or all rights
to the invention, including complete assignment of any
patents or patent applications relating to the invention.
B. Personnel may not: (1) sign patent agreements with
outside persons or organizations which may abrogate the
University System's rights and interests as stated in
this Policy or which otherwise conflict with this
Policy, nor (2) without prior authorization use the
name of the University of Maryland System or
constituent institutions in connection with any
invention.
VI. Revenue Sharing
A. The University System through its constituent
institutions shall share with the inventors revenue
which it receives from patents or inventions. Specific
provisions of grants or contracts may govern rights and
revenue distribution regarding inventions made in
connection with sponsored research. Consequently,
revenues received from such inventions may be exclusive
of payments of royalty shares to donors or contractors.
Moreover, constituent institutions may contract with
outside persons or organizations for the obtaining,
managing and defending of patents, and any royalty
share or expenses contractually committed to such
persons or organizations may be deducted before
revenues accrue or before the inventor's share is
distributed.
B. The revenues (net, if applicable per the preceding
paragraph) which are received from a patent or
invention will be applied first to reimburse the
University System Administration or constituent
institution for any specific, incremental expenses
incurred by it in obtaining and maintaining the patent
and in marketing, licensing and defending the patent or
licensable invention. After provision for such
expenses, such revenues shall be shared as follows: (1)
the first $5,000 will be paid to the inventor or
inventors: (2) thereafter the inventor(s) will receive
fifty percent of such revenues. Applicable laws,
regulations or provisions of grants or contracts may,
however, require that a lesser share be paid to the
inventor.
C. To the extent consistent with State and University
System budget policies any net revenue received on
account of an invention, after sharing with the
inventor, will be dedicated to research and to the
promotion of patenting and patents. If practicable,
eighty-five percent of the University System
Administration's or constituent institution's share of
new revenue from each invention will be designated for
research in the inventor's department or analogous unit
up to $100,000 in a fiscal year for a particular
department or analogous unit. The remaining part of
the net revenues shall be devoted to research and the
promotion of patenting and patents as directed by the
chief executive officer, or designee (or, for the
System Office, the Chancellor or designee).
D. If use of such funds for research within the inventor's
department or analogous unit is not practicable or for
an amount in excess of $100,000 per fiscal year, the
chief executive officer may allocate funds for other
use within the institution.
VII. Special Cases
The University System recognizes that special cases will
arise which are not specifically covered by this policy or
which may justify waivers of this policy. Such cases may be
submitted to the Chancellor or designee.
VIII. Administration
A. The Intellectual Property Committee consists of the
Vice Chancellor for Academic Affairs or designee as an
ex officio member and chair and no more than fourteen
other members selected and appointed by the Chancellor
from candidates nominated by the chief executive
officers of constituent institutions. Members are
appointed for three-year terms with non-concurrent
expiration dates and may serve successive terms.
B. The Intellectual Property Committee convenes at the
call of the Vice Chancellor or designee, who determines
when implementation or interpretation of the University
of Maryland System Patent Policy requires consideration
by the committee. Among the matters which may be
referred to the committee for recommendation to the
Chancellor are: whether the University of Maryland
System has an interest in an invention; questions not
covered by policy; and whether some part of the policy
should be waived.
C. When the committee is considering a particular
invention, the inventor and/or a representative
designated by the inventor may examine all materials
submitted to the committee, may make written and oral
presentations to the committee, and may be present
during oral presentations of others.
D. It is recognized that the evaluation of inventions and
discoveries and the administration, development and
processing of patents involves substantial time and
expense and requires talents and experience not
ordinarily found in its staff. Therefore, the
University System Administration or constituent
institution may enter into a contract or contracts with
third parties in connection with the administration of
identified inventions, disclosures of invention, and
developed patents.
E. Disputes on patent matters, including the
interpretation of this Patent Policy, shall be referred
for resolution to the Chancellor or designee.
Replacement for: BOR VII-4.00 and 4.01; BOT XIII-K